DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged (US Provisional Application 61/222,177 filed July 1st, 2009).
Response to Arguments
Applicant amended claims 1, 4, and 6 beyond formalities and ODP Rejections/
Applicant canceled claim 3.
Applicant added new claims 7 – 23.
The pending claims are 1 – 2 and 4 – 23 [Page 8 lines 1 – 4].
Applicant amended the Specification to address Examiner’s Specification Objections and comments on IDS filed on IPR related matters [Page 8 lines 5 – 9]
Applicant comments on the previous Interview conducted [Page 8 line 10].
While the Applicant appeared open to be contacted by the Examiner, such efforts were declined by the Applicant [Page 8 line 14].
Applicant’s arguments, see Page 8 lines 11 – 13, filed March 10th, 2026, with respect to claim 1 have been fully considered and are persuasive. The 35 USC 103(a) Rejection of claim 1 has been withdrawn.
Applicant contended the amendment overcomes the Rejections, but did not address any references, etc. or rely on previous reasons for allowance or PTAB Decisions [Page 8 lines 11 – 13].
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on September 19th, 2025; March 27th, 2026; and May 7th, 2026 were filed before the mailing date of the Final Rejection (this Office Action). The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Examiner.
The information disclosure statement (IDS) submitted on September 10th, 2024 and January 6th, 2025 were filed before the mailing date of the First Action on the Merits (mailed September 10th, 2025). The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Examiner.
Due to the excessively lengthy Information Disclosure Statement submitted by applicant, the examiner has given only a cursory review of the listed references. In accordance with MPEP 609.04(a), applicant is encouraged to provide a concise explanation of why the information is being submitted and how it is understood to be relevant. Concise explanations (especially those which point out the relevant pages and lines) are helpful to the Office, particularly where documents are lengthy and complex and applicant is aware of a section that is highly relevant to patentability or where a large number of documents are submitted and applicant is aware that one or more are highly relevant to patentability. Applicant is required to comply with this statement for any non-English language documents. See 37 CFR § 1.56 Duty to Disclose Information Material to Patentability.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 2 and 4 – 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 12 of U.S. Patent No. 12,120,307.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Pending claims 1 – 2 and 4 are within the scope of Patented claim 7 in which pending claims 2 and 4 recite the block size and basic coding unit sizes recited in patented claim 7 and Patented claim 7 recites the partitioning scheme and the single intra prediction type information as in pending claim 1.
Pending claim 5 is rendered obvious by Patented claim 8 in that a stored intra prediction mode table is used.
Pending claim 6 is rendered obvious by Patented claim 9 in the use of high level syntax elements.
Pending claim 7 is rendered obvious as being within the scope of Patented claims 1 or 7 (see at least option (1)).
Pending claim 8 is rendered obvious as being within the scope of Patented claims 1 or 7 (see at least option (2)).
Pending claim 9 is rendered obvious as within the scope of Patented claims 1 or 7 and Patented Specification Figures 6 – 8 (subfigures included rendering obvious recursively partitioning for the claimed second large block).
Pending claim 10 is rendered obvious as within the scope of Patented claims 1 – 3 (see at least options (1) and (2) for use of MPM and the mode table for the basic coding unit).
Pending claim 11 is rendered obvious as within the scope of Patented claims 1 or 7 and Patented Specification Figures 6 – 8 where recursive processing of blocks is obvious to one of ordinary skill in the art.
Pending claim 12 is rendered obvious as within the scope of Patented claims 1 – 3 or 7 – 9 (syntax including size partitions) and Patented Specification Figures 6 – 8 where recursive processing of blocks is obvious to one of ordinary skill in the art.
Pending claim 13 is rendered obvious as within the scope of Patented claims 1 – 3 or 7 – 9 (syntax for each partitions) and Patented Specification Figures 6 – 8 where recursive processing of blocks is obvious to one of ordinary skill in the art.
Pending claim 14 is the encoding method of pending claim 9 is rendered obvious as within the scope of Patented claims 4 or 10 and Patented Specification Figures 6 – 8 (subfigures included rendering obvious recursively partitioning for the claimed second large block).
Pending claim 15 is the encoding method of pending claim 10 is rendered obvious as within the scope of Patented claims 4 – 6 or 10 – 12 (see at least options (1) and (2) for use of MPM and the mode table for the basic coding unit).
Pending claim 16 is the encoding method of pending claim 11 is rendered obvious as within the scope of Patented claims 4 or 10 and Patented Specification Figures 6 – 8 where recursive processing of blocks is obvious to one of ordinary skill in the art.
Pending claim 17 is the encoding method of pending claim 12 is rendered obvious as within the scope of Patented claims 4 – 6 or 10 – 12 and Patented Specification Figures 6 – 8 where recursive processing of blocks is obvious to one of ordinary skill in the art.
Pending claim 18 is the encoding method of pending claim 13 is rendered obvious as within the scope of Patented claims 4 – 6 or 10 – 12 and Patented Specification Figures 6 – 8 where recursive processing of blocks is obvious to one of ordinary skill in the art.
Pending claims 19 – 23 are the apparatus implementing the steps of method claims 9 – 13 respectively and thus are similarly rendered obvious in view of Patented claims 1 – 3 or 7 – 9 for the reasons given above.
It would have been obvious to one of ordinary skill art at the time the invention was made to understand the Patented claims are within the scope of the pending claims and thus rendering the pending claims obvious and within the scope of the Patented Specification and further one of ordinary skill in the art would understand the recursive processing of blocks into smaller sizes to determine prediction modes for blocks for encoding to later decode.
Claims 1 – 2 and 4 – 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 4 and 7 – 14 of U.S. Patent No. 11,936,876.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Pending claim 1 is rendered obvious as being within the scope of Patented claim 1.
Pending claim 2 is within in the scope of Patented claim 1 in view of the 16x16 basic coding unit size (See Tables 1 and 2 at least and Figure 6 as the Patented Specification focuses on quad-tree partitioning thus splitting a 32 x 32 block as in Figure 6 would naturally be partitioned into 16 x 16 blocks (rendering obvious the basic coding unit size claimed) and rendered obvious to one of ordinary skill in the art.
Pending claim 4 is rendered obvious as being within the scope of Patented claim 1 (See at least Patented Figures 6 – 8 with the 64 x 64 block size taught as within the scope of Patented claim 1).
Pending claims 5 and 6 are rendered obvious by Patented claim 1 as the signaling regarding intra prediction types / partition / table information and additionally see the syntax elements claims and additionally Patented Specification Tables 1 – 4.
Pending claim 7 is rendered obvious as being within the scope of Patented claims 1 – 3 in which the use of MPM in the Patented Specification Table and Column 2 (at least lines 20 – 50).
Pending claim 8 is rendered obvious as being within the scope of Patented claims 1 – 3 and 7 – 10 in which the use of MPM in the Patented Specification Table and Column 2 (at least lines 20 – 50).
Pending claim 9 is rendered obvious as within the scope of Patented claim 1 and 7 – 10 and Patented Specification Figures 6 – 8 (subfigures included rendering obvious recursively partitioning for the claimed second large block).
Pending claim 10 is rendered obvious as within the scope of Patented claims 1 – 4, 7 – 10 and Patented Specification Figures 6 – 8 and Tables 1 – 3 (intra modes in tables).
Pending claim 11 is rendered obvious as within the scope of Patented claims 1 – 4, 7 – 10 and Patented Specification Figures 6 – 8 where recursive processing of blocks is obvious to one of ordinary skill in the art.
Pending claim 12 is rendered obvious as within the scope of Patented claims 1 – 4, 7 – 10 and Patented Specification Figures 6 – 8 and Tables 2 – 3 (syntax for spatial intra partition types) where recursive processing of blocks is obvious to one of ordinary skill in the art.
Pending claim 13 is rendered obvious as within the scope of Patented claims 1 – 4, 7 – 10 and Patented Specification Figures 6 – 8 where recursive processing of blocks is obvious to one of ordinary skill in the art.
Pending claim 14 is the encoding method of pending claim 9 is rendered obvious as within the scope of Patented claims 11 – 14 and Patented Specification Figures 6 – 8 (subfigures included rendering obvious recursively partitioning for the claimed second large block).
Pending claim 15 is the encoding method of pending claim 10 is rendered obvious as within the scope of Patented claims 11 – 14 and Patented Specification Figures 6 – 8 and Tables 1 – 3 (intra modes in tables)
Pending claim 16 is the encoding method of pending claim 11 is rendered obvious as within the scope of Patented claims 11 – 14 and Patented Specification Figures 6 – 8 where recursive processing of blocks is obvious to one of ordinary skill in the art.
Pending claim 17 is the encoding method of pending claim 12 is rendered obvious as within the scope of Patented claims 11 – 14, 7 – 10 and Patented Specification Figures 6 – 8 and Tables 2 – 3 (syntax for spatial intra partition types) where recursive processing of blocks is obvious to one of ordinary skill in the art.
Pending claim 18 is the encoding method of pending claim 13 is rendered obvious as within the scope of Patented claims 11 – 14, 7 – 10 and Patented Specification Figures 6 – 8 where recursive processing of blocks is obvious to one of ordinary skill in the art.
Pending claims 19 – 23 are the apparatus implementing the steps of method claims 9 – 13 respectively and thus are similarly rendered obvious in view of Patented claims 1 – 9 and for the reasons given above.
It would have been obvious to one of ordinary skill art at the time the invention was made to understand the Patented claims are within the scope of the pending claims and in view of the Patented Specification (Figure 6 included and at least Tables 1 – 4) as one of ordinary skill in the art would have understood quadtree partitioning (as in the Patenting Specification) and the block sizes would naturally arise from the partitioning (block sizes were 4 x 4, 8 x 8, etc.) as well as the variations in addressing the signaling and information of the claimed syntax elements and further one of ordinary skill in the art would understand the recursive processing of blocks into smaller sizes to determine prediction modes for blocks for encoding to later decode.
Claims 1 – 2 and 4 – 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 6 of U.S. Patent No. 11,082,697.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Patented claims 1 – 3 are the apparatus performing steps of the methods claimed in pending claims 1 – 2, 4 – 13, and 19 – 23 for a decoder.
Patented claims 4 – 6 are the apparatus performing steps of the methods claimed in pending claims 14 – 18 for an encoder.
Pending claims 1 is rendered obvious by being within scope of Patented claim 1 stating the coding unit sizes. Patented claim 1 further recites the same / similar conditional logic and is within the scope of pending claim 1 including the use of syntax elements to indicate intra spatial partition type and the usage of most probable mode for intra prediction.
Pending claim 2 is rendered obvious by being within scope of Patented claim 1 stating the coding unit sizes.
Pending claim 5 is rendered obvious by being within scope of Patented claim 2 regarding at least the use of pre-stored tables for spatial intra prediction / partition types.
Pending claim 6 is rendered obvious by being within scope of Patented claim 3 regarding at least the use of syntax elements.
Pending claim 7 is rendered obvious as being within the scope of Patented claims 1 (see at least option (1)).
Pending claim 8 is rendered obvious as being within the scope of Patented claims 1 (see at least option (2)).
Pending claim 9 is rendered obvious as within the scope of Patented claim 1 and Patented Specification Figures 6 – 8 (subfigures included rendering obvious recursively partitioning for the claimed second large block).
Pending claim 10 is rendered obvious as within the scope of Patented claims 1 – 3 (see at least options (1) and (2) for use of MPM and the mode table for the basic coding unit).
Pending claim 11 is rendered obvious as within the scope of Patented claims 1 and Patented Specification Figures 6 – 8 where recursive processing of blocks is obvious to one of ordinary skill in the art.
Pending claim 12 is rendered obvious as within the scope of Patented claims 1 – 3 (syntax including size partitions) and Patented Specification Figures 6 – 8 where recursive processing of blocks is obvious to one of ordinary skill in the art.
Pending claim 13 is rendered obvious as within the scope of Patented claims 1 – 3 (syntax for each partitions) and Patented Specification Figures 6 – 8 where recursive processing of blocks is obvious to one of ordinary skill in the art.
Pending claim 14 is the encoding method of pending claim 9 is rendered obvious as within the scope of Patented claim 4 and Patented Specification Figures 6 – 8 (subfigures included rendering obvious recursively partitioning for the claimed second large block).
Pending claim 15 is the encoding method of pending claim 10 is rendered obvious as within the scope of Patented claims 4 – 6 (see at least options (1) and (2) for use of MPM and the mode table for the basic coding unit).
Pending claim 16 is the encoding method of pending claim 11 is rendered obvious as within the scope of Patented claims 4 and Patented Specification Figures 6 – 8 where recursive processing of blocks is obvious to one of ordinary skill in the art.
Pending claim 17 is the encoding method of pending claim 12 is rendered obvious as within the scope of Patented claims 4 – 6 and Patented Specification Figures 6 – 8 where recursive processing of blocks is obvious to one of ordinary skill in the art.
Pending claim 18 is the encoding method of pending claim 13 is rendered obvious as within the scope of Patented claims 4 – 6 and Patented Specification Figures 6 – 8 where recursive processing of blocks is obvious to one of ordinary skill in the art.
Pending claims 19 – 23 are the apparatus implementing the steps of method claims 9 – 13 respectively and thus are similarly rendered obvious in view of Patented claims 1 – 3 for the reasons given above.
It would have been obvious to one of ordinary skill art at the time the invention was made to understand the Patented claims are within the scope of the pending claims and thus rendering the pending claims obvious and within the scope of the Patented Specification and further one of ordinary skill in the art would understand the recursive processing of blocks into smaller sizes to determine prediction modes for blocks for encoding to later decode and also decoding in the inverse process of encoding.
Allowable Subject Matter
Claims 1 – 2 and 4 – 23 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 Non-Statutory Obvious Double Patenting as set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: Claim 1 is taken as the representative claim. Independent claim 1 recites features similar to US Patent #11,936,876 and similar reasons apply as the syntax claimed in signaling the intra prediction mode of the 32 x 32 block not partitioned is not fairly taught in the prior art and while partitioning large blocks has been taught in the prior art, the intra prediction syntax signaling has not been fairly taught nor fairly rendered obvious (see also the December 18th, 2023 Notice of Allowance reasons additionally). When the limitations are viewed as a whole, the prior art fails to contemplate intra modes as claimed by the Applicant in view of the video codecs being improved.
Claim 9 details a recursive block processing of a method of claim 1 and is similarly Allowable.
Claim 19 is the apparatus implement the method of claim 9 and thus is similarly Allowable.
Claim 14 is the encoder method implementing the inverse method of claim 9 and thus similarly reasons for Allowance apply.
Regarding claims 2, 4 – 8, 10 – 13, 15 – 18, and 20 – 23, the dependent claims depend on allowed independent claims and thus are similarly Allowable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
References previously cited against the claims: Chen, et al. (US PG PUB 2010/0086029 A1 referred to as “Chen” throughout in which citations will come from US Provisional Applications 61/166,631 (referred to as “Chen ‘631” throughout) and 61/144,357 (referred to as “Chen ‘631” throughout)) [The US PG PUB is cited in Applicant’s September 10th, 2024 IDS as US PG PUB Item #29 – The Examiner will cite from the US Provisional References where “Chen” refers to the collective of “Chen ‘631” and “Chen ‘357”]; Moriya, et al. (US PG PUB 2009/0046781 A1 referred to as “Moriya” throughout) [Cited in Applicant’s September 10th, 2024 IDS as US PG PUB Item #24]; and Moriya, et al. (US PG PUB 2008/0123947 A1 referred to as “Moriya 47” throughout) [Cited in Applicant’s September 10th, 2024 IDS as US PG PUB Item #20].
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tyler W Sullivan whose telephone number is (571)270-5684. The examiner can normally be reached IFP.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Czekaj can be reached at (571)-272-7327. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TYLER W. SULLIVAN/ Primary Examiner, Art Unit 2487
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